IHT Internationale Heiztechnik GmbH and Uwe Danzinger v Ideal-Standard GmbH and Wabco Standard GmbH. (Free movement of goods) [1994] EUECJ C-9/93 (22 June 1994)

IHT Internationale Heiztechnik GmbH and Uwe Danzinger v Ideal-Standard GmbH and Wabco Standard GmbH. (Free movement of goods) [1994] EUECJ C-9/93 (22 June 1994)

There is no unlawful restriction on trade between Member States under Articles 30 and 36 where a subsidiary in Member State A is enjoined from using a trade mark due to risk of confusion, even if the manufacturer in Member State B lawfully uses the mark by assignment, and the mark originally belonged to an affiliated company; the exhaustion of rights doctrine does not apply absent economic links, and territoriality and independence of trade mark rights prevail.

Citation
[1994] EUECJ C-9/93
Parties
Applicant: Ideal-Standard GmbH; Respondent: IHT; Parent Company of Respondent: Compagnie Internationale de Chauffage (CICh); Former Assignee: Société Générale de Fonderie (SGF); French Subsidiary of Applicant: Ideal-Standard SA
Jurisdiction
European Union
Judgment Date
22 June 1994
Procedural Posture
Preliminary Ruling / Court of Justice of the European Communities, Post Referral From Oberlandesgericht Duesseldorf
Outcome
No unlawful restriction; injunction against use of trade mark in Germany upheld.
Legal Topics
Trade Mark Assignment, Free Movement of Goods, Exhaustion of Rights, Risk of Confusion, Territoriality of Trade Mark Rights
Intellectual Property European Union Law Commercial Law Trade Mark Assignment Free Movement of Goods Exhaustion of Rights Risk of Confusion Territoriality of Trade Mark Rights

Case Brief

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Parties

Ideal-Standard GmbH

Applicant

IHT

Respondent

Compagnie Internationale de Chauffage (CICh)

Parent Company of Respondent

Société Générale de Fonderie (SGF)

Former Assignee

Ideal-Standard SA

French Subsidiary of Applicant

Procedural Posture

Preliminary Ruling / Court of Justice of the European Communities, Post Referral From Oberlandesgericht Duesseldorf

Legal Issues

  1. 1 Whether prohibiting use of a trade mark in one Member State, where the mark was assigned in another Member State to an unrelated entity, constitutes an unlawful restriction under Articles 30 and 36 of the EEC Treaty
  2. 2 Application of exhaustion of rights doctrine in cases of voluntary trade mark assignment
  3. 3 Assessment of risk of confusion between products with identical trade marks but different origins

Ratio Decidendi

There is no unlawful restriction on trade between Member States under Articles 30 and 36 where a subsidiary in Member State A is enjoined from using a trade mark due to risk of confusion, even if the manufacturer in Member State B lawfully uses the mark by assignment, and the mark originally belonged to an affiliated company; the exhaustion of rights doctrine does not apply absent economic links, and territoriality and independence of trade mark rights prevail.

Court Disposition

No unlawful restriction; injunction against use of trade mark in Germany upheld.

Orders

  • Decision on costs is a matter for the national court.
  • Costs incurred by German Government, United Kingdom, and Commission are not recoverable.